Why surveys are useful. Trademark law is all about consumers' perception. Beyond marketing strategies, advertising campaigns, market shares and sales figures, there is essentially only one valid and reliable way to help establish how consumers view a trademark and the products or services in association with which it is used, and that is survey evidence.
Even the most experienced business person may at times be surprised by what is actually recognized as a source indicator by consumers and what is not. In some instances, the most elaborate advertising campaign to promote a brand may prove ineffective in acquiring the desired recognition among consumers while, on the other hand, a simple feature of the product, such as its shape or color, may acquire unexpected distinctiveness among consumers. When Charlie Soderstrom, one the founders of UPS, decided that his company's delivery trucks ought to be brown so as to easily appear clean, did he know that this color would become an important intellectual property asset for his company? Probably not.
Surveys can prove as useful to a business owner as they can be effective for his or her trademark agent or attorney. On the business side, surveys can help management determine whether a trademark is recognized by its consumers as a source identifier and thus worth protecting as an intellectual property asset by filing a trademark application. Moreover, in a situation where management feels that the intellectual property rights of their business are being violated by a competitor, it may be wise to have a survey conducted to determine whether there is confusion amongst consumers as to the source of the competitor's product before embarking in a lengthy and costly litigation.
As for the trademark agent or attorney, survey evidence can be used in the prosecution of a trademark application to show acquired distinctiveness in order to overcome an objection from the Examiner based on, for example, the clearly descriptive or deceptively misdescriptive character of the trademark for which an application has been filed. Survey evidence can also be used to support an application for a distinguishing guise, which requires that evidence be filed in support thereof, to show that purchasers in the marketplace have come to recognize the guise (a shaping of wares or their containers) as distinguishing the wares of its owner from those of others (e.g., surveys can serve to replace affidavits from actual purchasers or retailers, which can be difficult to obtain). Finally, in a litigation context, survey evidence can serve to convince the Registrar of Trademarks ("Registrar") in an opposition proceeding or a court in infringement, opposition, expungement and passing off actions that a trademark is or is not well-known amongst the relevant consumers and/or that a third party's trademark creates or does not create confusion with one's own trademark. Furthermore, a well-designed survey with positive results can often be a powerful tool in a mediation or settlement context that may help convince another party of one's case and lead to an amicable resolution of a dispute.
Question of privilege. Businesses and attorneys are oftentimes wary to run a survey. "What if the results obtained are not as expected? Could it not be used against us later on?" While these are valid concerns, in most cases, the answer to the second question is no. Indeed, the results of a survey, and even the simple fact that a survey has been conducted, are often privileged and are thereby not subject to disclosure. In particular, a survey commissioned by or for an attorney in connection with actual or contemplated litigation is privileged. Outside the broad context of litigation, it is not clearly established whether a survey commissioned by or for a client for legal opinion is privileged or not. However, it is clear that surveys conducted for normal commercial purposes are not privileged and should be approached with caution as they may be discoverable in the context of litigation. Moreover, even if a survey is protected by litigation privilege, once a party decides to produce the survey as evidence before the Registrar/in court, it not only becomes part of the public record but everything about the survey has to be disclosed, including: method, raw data, questions asked, how they were asked, instructions to the interviewer, instructions to the survey expert, etc. This is why it is important to retain the services of a properly qualified survey expert and a trademark attorney who has experience in this area. They will know how to properly design, execute and report the survey to help ensure that it will prove useful to the Registrar/court in their decision-making capacity and will not be easily attacked by the other party and/or discarded by the Registrar/court.
Types of surveys. There are two main types of surveys in the context of trademarks. The reputation survey (also called a distinctiveness survey) will seek to establish whether consumers associate a particular trademark with its owner and to what degree they do. In other words, this type of survey will be used to establish the distinctiveness of a trademark and can be used in both prosecution and litigation contexts. A confusion survey, on the other hand, will show whether consumers are likely to be confused as to the source of a product or service by the use of a particular trademark. This type of survey is useful in the vast majority of trademark litigation proceedings, including infringement, opposition, expungement and passing off actions.
Businesses are often accustomed to conducting what we call "marketing surveys" to evaluate customers' appreciation of a product, their awareness of a brand, etc. However, for various reasons beyond the scope of this article, such marketing surveys have very limited, if any, usefulness in either trademark prosecution or litigation.
Forms of surveys. There are different methods of conducting surveys, which have different scopes. Surveys are usually conducted by telephone, on the internet or through shopping mall or retail store intercepts. Telephone and internet surveys are the least expensive as survey field houses are usually able to combine more than one study together thus decreasing the cost for each study individually. However, they can also be more limited, especially in the case of telephone surveys, where nothing visual can be shown to the respondents and thus cannot test design marks or guises or even word marks where pronunciation or the surrounding circumstances may be an issue.
A survey can either be run as a "national survey," which serves to represent the relevant Canadian consumers as a whole, or a "pilot survey." A national survey should usually be conducted in at least four different cities in four different provinces, including in at least one bilingual city in the province of Quebec to capture any linguistic differences. It is also generally recommended that in each city, interviews be divided between urban and rural areas to be as representative as possible of Canadians who live both in cities and in rural regions.
Pilot surveys usually involve only one city and a more limited sample size. As suggested by the name, pilot surveys are advantageous to run as they are used to get preliminary results to determine whether the survey, as designed, has any flaws and whether it is worth extending as a national survey. If the design of the pilot survey has an issue or the results are not as expected, the client can avoid wasting time and money by rectifying the issue before running a national survey or avoid rolling it out altogether. However, if the pilot test results are encouraging and the client proceeds very quickly with rolling out a national survey, these results can be included in the national survey (i.e., without having to rerun the city/location of the pilot) to help keep costs down to a minimum.
Conclusion. While surveys can be expensive, they can be very useful in making sound business decisions when it comes to one's trademarks which, in the long run, can assist a business to develop a strong and valuable trademark portfolio that it can successfully enforce against its competitors. Your trademark attorney can assist you in retaining a properly qualified survey expert and work with you and the survey expert to conduct a survey that will prove both useful to your business while also being valid and reliable for the Registrar/court.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.